July 24, 2008

In yesterday’s Federal Register (excerpt link below), the USPTO formally addressed the topic of whether or not applicants may use foreign law firms or service provider companies for the preparation of patent applications to be filed within the United States. In summary, the excerpt states that “Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent and Trademark Office (USPTO), such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications,” and that “[a]pplicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.” The excerpt also notes that the USPTO is aware of the increase in foreign solicitations, noting in addition to the foregoing that “if the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure” and that “[a] foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.” The scope of foreign filing licenses are contained within 37 C.F.R. § 5.15, and the USPTO states within the excerpt that “[t]his notice does not change existing law or regulations.” Additional information on this subject may be found at the links below.

Federal Register Excerpt (PDF): LINK
37 C.F.R. § 5.15: LINK
Patently-O Article: LINK

1 comments:

Anonymous said...

I am yet to see a legal analysis of this issue. I just see a pitched battle going on, and a lot of delicately disguised mud being thrown.

Which sort of tells me that patent attorneys, both US and Indian, should all go back to law school and relearn legal writing.

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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